What is a
Trademark? A trademark can be any word, slogan, design, symbol, or
even a color, smell, product configuration or a combination of these, used to
identify the source of origin of particular goods and services. The trademark
serves as a source identifier of your goods and services, to distinguish it
from the goods and services of others. For example, Nike has a registered
trademark with the United States Patent and Trademark Office ("USPTO"). Their
mark is used to distinguish their goods and services over other shoe companies.
Nike actually owns several trademarks, including design marks as well, such as
their swoosh symbol.
Here is another example, remember when Paris
Hilton was saying "that's hot" everywhere? She applied for a trademark
application with the USPTO. If it ultimately gets issued, it doesn't mean that
no one else can ever say that phrase. Ms. Hilton's trademark attorney has filed
the slogan only in connection with particular specified goods and services.
Therefore, if the mark does ultimately issue, she will have federal rights to
prevent others from using the mark in connection with the same or similar goods
and services she registered the mark with.
Why You Need to Conduct
a Trademark Search and File an Application You are ready to launch
a new product, or you are about to start a new business and you have a great
name you've been wanting to use for years. But can you? Here is a typical
scenario: Company A opens its doors (a physical store and online) choosing a
name without conducting a trademark search. Company A starts promoting its name
by investing in advertisements (print and online such as Google adwords).
Months go by and Company A is doing quite well financially, has invested a lot
money in advertising and marketing, and its page ranking in Google went up
considerable for its desired terms (after spending a ton of money to search
engine optimization marketing firms). Then one day, Company A receives a cease
and desist letter from Company B's attorney similar to this:
Company B
is the owner of United States Federal Trademark Registration No. XX and other
trademark registrations pertaining to this mark. Company B uses this mark in
the United States in conjunction with its goods and services. Company B legally
owns the trademark upon which your online store, products, and advertisement
are infringing.
Company B believes that you are intentionally trading
on the goodwill of Company B by using a trademark that is confusingly similar
to Company B's Trademark and that your use of the Trademark does, or is
intended to confuse or mislead customers seeking Company B's products or
services. This activity is actionable under federal law and causes you to be
liable to Company B in every state in which you have made sales or done
business. Your activities are unlawful and constitute unfair competition,
intentional trademark infringement and dilution, false designation of origin
and/or cybersquatting.
Federal Law provides numerous legal remedies
for trademark infringement and dilution, including, but not limited to,
preliminary and permanent injunctive relief, monetary damages, claim to a
defendant's profits...
So now what? You are thinking it can only be a
bad dream, I can't stop using the name I've been using all this time. Think
again. Although you may be able to fight or settle in order to prevent your
name from being taken away, it typically takes time and a lot of money. This is
the sad scenario many business owners face when the neglect to take into
account intellectual property rights of others.
Rather than being a
victim to bad business practices, the proper way to proceed is to obtain a
trademark search on each and every name you intend to use in connection with
the goods and services your business is promoting. A competent trademark
attorney can conduct the search and analyze the results to advise you whether
or not you should use the name. If the name appears to be clear, then it is
advisable to proceed with your own application for a trademark in order to
serve as a defense and to be used offensively against would be trademark
infringers.
Upon issuance of your federally registered trademark, you
have the following significant benefits:
* Nationwide constructive
notice of trademark ownership
* Evidence of and a presumption of
ownership
* Federal court jurisdiction (should you have to sue to
prevent infringement)
* Federal registration can be used to obtain
foreign registration
* The registration may also be filed with U.S.
Customs Service to prevent importation of foreign goods that infringe on the
trademark
Trademark Issues on the Internet What about
domain name disputes; use of trademarks in Google adwords advertising or banner
advertisements; cybersquatting; how about parody or criticism websites like
www.starbucked.com; trademark issues with pop up ads; etc. These are all issues
that occur everyday online and are costing business owners millions. Each issue
can be resolved in different ways, either by the use of cease and desist
letters; negotiations and settlement; a traditional trademark infringement
lawsuit in either federal or state court; an Anticybersquatting Consumer
Protection Act (ACPA) lawsuit; or an Uniform Domain Name Dispute Resolution
Policy (UDRP) proceeding.
© 2006 Michael N. Cohen, Esq. No
portion of this article may be copied, retransmitted, reposted, duplicated or
otherwise used without the express written approval of the author.
ABOUT THE AUTHOR Michael N. Cohen, Esq. is a licensed patent
attorney and is the principal of the Law Office of Michael N. Cohen, P.C.,
located in Beverly Hills, California. Mr. Cohen can be contacted at
http://www.patentlawip.com or 310-288-4500.
